Michelin North America, Inc. v. MARCO CASTILLO
Claim Number: FA1606001681276
Complainant is Michelin North America, Inc. (“Complainant”), represented by James M. Bagarazzi of Dority & Manning, Attorneys at Law, P.A., South Carolina, United States. Respondent is MARCO CASTILLO (“Respondent”), Massachusetts, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinbear.com>, registered with Fastdomain Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2016; the Forum received payment on June 27, 2016.
On June 27, 2016, Fastdomain Inc. confirmed by e-mail to the Forum that the <michelinbear.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@michelinbear.com. Also on June 28, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it designs, manufactures and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. Complainant and its related entities have a business presence in more than 170 countries worldwide and supply a range of thousands of products. At the turn of the 20th century, Complainant created the MICHELIN Guide, its first travel publication, in an effort to encourage motorists to travel in the recently introduced automobile. Since then, hundreds of other travel guides have been developed by Complainant to cultivate and satisfy the pursuit of adventure. Complainant’s travel guide includes a famous MICHELIN rating system for restaurants. Complainant’s professional rating of restaurants is based on a unique, time-tested methodology that ensures that the MICHELIN rating can be relied upon. Complainant is famously known for its MICHELIN ratings of restaurants throughout the world. Complainant has registered the MICHELIN mark in the USA and elsewhere around the world, with rights dating back to 1970, in various categories such as pneumatic tires, plush toys, travel guides, etc. Its 2006 registration includes a depiction of the “Michelin Man”, which resembles a plush toy that some might think is a bear. Complainant’s MICHELIN mark is famous around the world.
According to Complainant, the disputed domain name is confusingly similar to the MICHELIN mark as it incorporates the mark in its entirety, adds the generic term “bear” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the disputed domain name. Rather, the disputed domain name resolves to a website that prominently displays Complainant’s MICHELIN mark to attract visitors with an interest in restaurants located in the vicinity of Boston, Massachusetts and so actively seeks to take full advantage of the Complainant’s MICHELIN goodwill and famous reputation associated with restaurants. The website at the disputed domain name purports to offer restaurant reviews. Further, Respondent did not respond to a cease and desist letter notifying Respondent of Complainant’s rights in the mark which is further evidence of a lack of rights and legitimate interests. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent is using the disputed domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes. Respondent had actual and/or constructive knowledge of the MICHELIN mark and Complainant’s rights therein because of the mark’s fame, notoriety, and multiple trademark registrations. Respondent used a privacy shield when registering the domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark MICHELIN with rights dating back to 1970. The mark is famous.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that purports to provide restaurant reviews that may compete with those of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The disputed domain name incorporates Complainant’s mark in its entirety, adds the generic term “bear” and the gTLD “.com.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: the Panel’s notes the WHOIS information regarding the disputed domain name, listing “Marco Castillo” as registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the disputed domain name. Rather the disputed domain name resolves to a search engine website, prominently displaying the MICHELIN mark and purporting to offer restaurant reviews, which would compete with Complainant’s offer of such reviews. Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent’s use of the disputed domain name disrupts Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because Respondent is diverting potential customers to a website which may reflect tastes and commentary that reflect poorly upon Complainant’s goodwill established in the mark, namely its rigorous evaluation standards for restaurants accorded MICHELIN ratings. Panels have agreed that, where a respondent has attempted to divert Internet users to a website that purports to offer the same services as a complainant, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelinbear.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 26, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page